Krist v. Scholastic, Inc.

• Decision Date: 18 November 2019
• Docket Number: CIVIL ACTION NO. 16-6251
• Citation: 415 F.Supp.3d 514
• Parties: Bob KRIST, Plaintiff, v. SCHOLASTIC, INC., Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

415 F.Supp.3d 514

Bob KRIST, Plaintiff,

v.SCHOLASTIC, INC., Defendant.

CIVIL ACTION NO. 16-6251

United States District Court, E.D. Pennsylvania.

Filed November 18, 2019

MEMORANDUM OPINION

Rufe, District Judge.

Plaintiff Bob Krist, a professional photographer, initiated this civil action against Defendant Scholastic, Inc. based on a claim of copyright infringement, in violation of the Copyright Act.¹ Although Scholastic obtained access to use Krist's photographs in accordance with a limited licensing agreement, Krist argues that Scholastic's use exceeded the licensing agreement's terms, and therefore infringed Krist's copyrights. Plaintiff now moves for partial summary judgment with respect to certain photographs and Defendant moves for summary judgment with respect to all of the photographs. For the reasons that follow, both motions will be granted in part and denied in part.

I. FACTS

A. The Agreements

Krist is a National Geographic professional photographer who monetized his photographs through the stock photography agency Corbis Corporation.² Around 1995, Krist began participating in the Corbis Copyright Registration Program.³ Through the program, Krist would assign to Corbis the rights to his photographs solely for the purpose of copyrighting the photographs.⁴ Corbis then copyrighted the photographs through a group registration program whereby multiple photographers' work was copyrighted at once under the Corbis name.⁵ After registering the photographs, Corbis assigned back to Krist complete copyright ownership of all the photographs.⁶

Krist also entered into a representation agreement with Corbis.⁷ This agreement authorized Corbis to issue limited licenses to third parties for the use of Krist's photographs in exchange for a percentage of the license fee charged.⁸ Corbis then entered into agreements, referred to by the parties as "Preferred Vendor Agreements" ("PVAs"), with different third parties, which shaped the licensing procedures between Corbis and the individual licensees.

Scholastic was one such licensee of photographs. In 2004, Corbis and Scholastic entered into a Preferred Pricing Agreement ("2004 PVA")⁹ to govern license agreements.¹⁰ In 2008, and again in 2011, Corbis and Scholastic entered into new PVAs ("2008 and 2011 PVAs").¹¹

These PVAs listed prices, terms, and rights for a range of uses of photographs, based on factors including the estimated print run, size of the image, and territory where the publication would be sold.¹² Corbis gave Scholastic access to its stock photo collection through its internal, password-protected archive.¹³ Scholastic would select images it wanted to use and notify Corbis of the anticipated usage of the selected photographs.¹⁴ Corbis would then issue an invoice for the use of the selected photograph, with the limitations such as print run, geography, and duration included, based on the applicable PVA.¹⁵ There is no dispute that Scholastic paid the fee specified in the invoices. Krist's only allegation is that Scholastic exceeded the scope of the invoices, i.e., that if an invoice allowed a print run of 50,000, Scholastic would pay for 50,000 but then print far more.

B. The Complaint

On November 30, 2016, Krist filed a Complaint against Scholastic alleging that Scholastic had exceeded the scope of the licenses it had agreed to with Corbis.¹⁶ Krist attached to the Complaint exhibits containing 45 rows of photographs — with each row containing an image and the name of the image, along with a corresponding invoice number¹⁷ and the copyright registration number¹⁸ — as to which he alleged Scholastic exceeded the scope of the limited license it obtained from the invoice.¹⁹ In his deposition, Krist explained how the alleged infringing uses in the Complaint were compiled — all 45 were selected based only on the knowledge that the photographs had been licensed to Scholastic and the belief that Scholastic had a history of exceeding licenses.²⁰ At the time he filed the Complaint, Krist had no other information suggesting that Scholastic infringed on his copyrights.²¹

C. Krist's Knowledge of Potential Claims

When exactly Krist had knowledge of Scholastic's alleged wrongdoings is hotly disputed. It is uncontested that Krist was informed that he had a potential claim against Scholastic by his counsel, Maurice Harmon, who was Krist's neighbor. The details of how and when these contacts occurred have evolved throughout the litigation.

In the deposition conducted in this case, Krist repeatedly testified that Harmon first reached out to him in 2014 and, accordingly, their first meeting was also in 2014.²² After the close of discovery, Scholastic learned that, in a separate case Krist filed against a different publisher, Krist had represented that Harmon and Krist first met in 2013.²³ Scholastic then moved to reopen discovery and continue Krist's deposition.²⁴ Krist responded by serving a revised interrogatory admitting that he was first contacted by Harmon in "mid-November 2013 regarding potential copyright infringement claims against textbook publishers" and that the first substantive discussion regarding Harmon potentially representing Krist and searching for documents occurred in a social setting on November 22, 2013.²⁵

While Scholastic's motion to reopen discovery was pending, Krist responded to interrogatories served in the other case with a statement indicating that his first meeting with Harmon actually occurred on November 14, 2013.²⁶ In this interrogatory response, Krist maintained that at the November 22, 2013 social gathering, he and Harmon "engaged in initial discussions about potential representation in copyright matters."²⁷

The Court then reopened discovery for the "limited purpose of permitting the continued deposition of Plaintiff Bob Krist regarding: (1) the precise date and circumstances regarding the initial conversation between Krist and his counsel, and (2) any information known to Krist about Scholastic's use before his conversation with his counsel."²⁸

At his continued deposition, Krist testified that it was at the November 14, 2013 lunch meeting with Harmon that they first discussed the issues in this case.²⁹ Although Krist had no information of his own to suggest that Scholastic infringed on his photographs, Krist testified that Harmon told him that he thought Krist "would have a case against several publishers."³⁰ Krist explained that Harmon did not indicate any specific photographs that had been infringed.³¹ Rather, Harmon's basis for concluding that Krist might have a copyright infringement claim was that there seemed to be a pattern among publishers, including Scholastic, to infringe copyrights.³² At this lunch, Krist testified that the "whole issues came out."³³ After leaving this lunch, Krist testified that he was aware "that there may be some copyright infringement cases that might be worth pursuing," and told his wife as much.³⁴

Krist also testified that nothing about the substance of the claims was discussed at the November 22, 2013 social gathering.³⁵ After these conversations Krist put the matter "on the shelf to do the other things" and it was "relegated to, you know, something that we were going to come back to and do more thinking about."³⁶ Krist explained that he "pushed it further down the queue than it deserved at that point" because "I don't enjoy learning that I've been ripped off. It's not pleasant. So I had a million other things to deal with, so I dealt with them."³⁷

At his continued deposition, Krist also identified another previously undisclosed meeting with Harmon on December 26, 2013.³⁸ In April 2014, Krist contacted some of his photographer friends whose names Harmon had given as references.³⁹ It was not until November 30, 2016, more than three years after Krist and Harmon first met about these issues, that Krist initiated this suit.

D. Cross-Motions for Summary Judgment

Plaintiff seeks partial summary judgment against Scholastic for the following eight claims, based on four of the photographs⁴⁰ listed in the complaint:

1) the use of "Rainforest Landscape"⁴¹ on the title page of Scholastic's publication Rain Forest Homes.⁴² Scholastic made 221,682 copies of the publication.⁴³ Scholastic's license for this photograph authorized a print run of 50,000 and included an expiration date of January 9, 2008.⁴⁴

2) the use of "Touro Synagogue Altar."⁴⁵ This photograph appears in Scholastic's publication Scholastic Book of World Records 2012 .⁴⁶ Scholastic made 511,202 copies of the book.⁴⁷ Scholastic's license allowed a print run of up to 500,000 copies in that publication.⁴⁸ "Touro Synagogue Altar" also appeared in Scholastic Book of World Records 2010 .⁴⁹ Scholastic made 847,350 copies of the book⁵⁰ but provided no license authorizing the use of the photograph in the book.

3) the use of "Scarlet Macaw on a Tree Branch"⁵¹ in Scholastic's publication Disney Yearbook 2006 .⁵² Plaintiff lists this photograph three times in the complaint with three separate invoices. Scholastic made 315,000 copies of Disney Yearbook 2006⁵³ but did not provide a license for the photograph.⁵⁴

4) the use of "Lifeguard on Duty"⁵⁵ in both of Scholastic's versions of Thunder and Lightning .⁵⁶ Between the two versions, the photograph was copied 518,000 times⁵⁷ but Scholastic has not provided any license for its use of the photograph.⁵⁸

Krist also seeks dismissal of Scholastic's affirmative defenses and a finding that Scholastic's infringements were willful. Plaintiff has not presented any evidence showing infringement for any of the other photographs cited in the complaint.

Defendant seeks summary judgment on all of Plaintiff's claims based on: 1) Plaintiff's alleged invalid copyright registration; 2) Plaintiff's failure to show unauthorized copying by Scholastic;⁵⁹ 3) the statute of limitations; and 4) the allegation that Plaintiff's claims are not actionable under copyright law and are instead contract claims.

II. LEGAL STANDARD

"The underlying purpose of summary judgment...